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My academic research supervisor is asking me to write a patent that he is self-funding, with potential private commercial interests and benefits. I am also directly involved in the work that is related to this patent. However, this work was funded by my supervisor's research grants from our country.

Upon me questioning his motives, he told me that researchers have a right to the intellectual property of projects funded by the government. Is such a claim regarding patents and/or intellectual property generally considered as ethical in academia?

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    What country are you in? – Brian Borchers Sep 14 '19 at 23:45
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    Closely related: academia.stackexchange.com/questions/19470/… – Nate Eldredge Sep 15 '19 at 0:36
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    I guess there's two separate questions here: is your supervisor correct in saying that the researcher is legally entitled to patent the invention? (This would depend on the policies of the government in question and of your university, and the details of the grant award, and perhaps your employment contracts.) Second, assuming your supervisor is right and it is legal, is it also ethical? – Nate Eldredge Sep 15 '19 at 0:39
  • So he is claiming it is self-funded but getting a grant? Which part is self funded? – Solar Mike Sep 15 '19 at 4:18
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    @BrianBorchers I prefer to not reveal my country of origin, but it is a Western country. – plu Sep 16 '19 at 18:05
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It is certainly true that some research funded by some grants in some universities in some countries can be patented. The university should have an intellectual property policy (and the funded may have one). That's the document that will tell you the answer to this question. That policy should also give you some idea about appropriate sharing of the rights between the researchers involved in the project (it's not clear from your question whether you were involved in the research supporting the patent application). And there is possibly a commercialisation group within the university who would be involved in patent applications too.

  • For clarification, I am directly involved in the research support the patent application. That's a good idea, I should check with my university's intellectual property policy. – plu Sep 16 '19 at 18:12
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In the US, the Bayh-Dole act explicitly gives intellectual property rights for federally funded research to grant recipients rather than the federal government.

The argument in favor of the act was that most of the federally-owned patents originating from university research were not used commercially. The act gives incentive for university researchers to commercialize their work, presumably contributing to economic growth.

The first "dibs" on patent ownership go to the university, typically with some agreement to share the benefits with the inventors in some way. However, institutions can also waive those rights and let the individual inventors own the patent.

If you were in the US, it would be up to your institution's policies to determine who has ownership.

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In Germany, the right to the invention would first be with the employer (university).

  • The employer can then decide whether they want to file a patent or whether they "free" the invention. The inventors will receive some compensation iff the university manages to license the patent and achieve a net gain.
  • If the invention becomes free, the inventors can personally decide to file a patent.
  • For public institutions (such as universities) there's a 3rd possibility which is to tell the inventors to file if they are interested to do so (i.e. the university doesn't want to pay the fees) but compensate the unviersity iff there's a net gain.

If you are directly involved in the invention work, you should have known about this before because you should be named as co-inventor in the internal description of the invention. Check whether your university has a similar policy and whether/what has been submitted for this internal procedure.

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